Universal Remote Control, Inc.v.Universal Electronics Inc.

Patent Trial and Appeal Board

Dec 16, 2015

10288727 (P.T.A.B. Dec. 16, 2015)

Trials@uspto.gov Paper 45
571-272-7822 Date Entered: December 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIVERSAL REMOTE CONTROL, INC.,
Petitioner,

v.

UNIVERSAL ELECTRONICS, INC.,
1

Patent Owner.
____________

Case IPR2014-01109
Patent 7,831,930 B2
____________

Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
WILLIAM A. CAPP, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1
Patent Owner represents that the owner of the patent and real party-in-
interest is Universal Electronics, Inc. Paper 4. Office assignment records
indicate, however, that U.S. Bank National Association is the owner of the
patent. Patent Owner should update Office assignment records to be
consistent with its representations made in Paper 4 of this proceeding.

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I. BACKGROUND
Petitioner Universal Remote Control, Inc. filed a request for inter
partes review of claim 1 of U.S. Patent No. 7,831,930 B2 (Ex. 1001, “the
’930 patent”) under 35 U.S.C. §§ 311–319. The Board instituted an inter
partes review of the claim on an asserted ground of unpatentability for
obviousness. Paper 9 (“Dec. on Inst.”).
Subsequent to institution, Patent Owner Universal Electronics Inc.
filed a Patent Owner Response in both unredacted (confidential) and revised
redacted forms (Papers 16 and 39 (“PO Resp.”)), along with a Motion to
Seal (Paper 18). Petitioner filed a Reply in both unredacted (confidential)
and revised redacted forms (Papers 26 and 40; (“Pet. Reply”)), along with a
Motion to Seal (Paper 24).
Patent Owner filed a Motion to Exclude (Paper 29; “PO Mot. to
Exclude”). Petitioner filed an Opposition to the Motion to Exclude (Paper
34; “Pet. Exclude Opp.”), and Patent Owner filed a Reply (Paper 35; “PO
Exclude Reply”). Petitioner filed a Motion to Exclude (Paper 30; “Pet. Mot.
to Exclude”). Patent Owner filed an Opposition to the Motion to Exclude
(Paper 33; “PO Exclude Opp.”), and Petitioner filed a Reply (Paper 36, “Pet.
Exclude Reply”).
An oral hearing was held on August 19, 2015. A transcript of the
hearing is included in the record (Paper 44; “Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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For the reasons that follow, we determine that Petitioner has not shown by a
preponderance of the evidence that claim 1 of the ’930 patent is
unpatentable.

A. Related Proceedings
According to Petitioner, the ’930 patent is involved in the following
lawsuits: Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
SACV 13-00984 AG (JPRx) (C.D. Cal.); and Universal Electronics Inc. v.
Peel Technologies, Inc., No. SACV 13-01484 AG (JPRx) (C.D. Cal.). Pet.
1–2.

B. The ’930 Patent
The ’930 patent relates to a user interface for a universal remote
control application resident on a hand-held electronic device. Ex. 1001,
col. 1, ll. 13–16. In one embodiment of the invention, the remote control
application may provide one or more “favorites” pages containing button
icons which the user may configure for direct access to favorite
programming (e.g., to cause the transmissions of commands to cause a
device to tune to a favorite channel). Id. at col. 19, ll. 26–30. Figures 17a
and 17b are reproduced below.
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Figures 17a and 17b illustrate exemplary steps to set up a remote
control application favorite-channel soft key. Id. at col. 2, ll. 30–31. An
exemplary “favorites” page is illustrated in Figure 17a, showing content
providers by their logos. Id. at col. 19, ll. 32–36. To configure or add a
“favorites” icon, one may tap customize icon 122 while a favorites page is
displayed and select “Add Favorite” or “Edit Favorite,” or may tap one of
the default icons that is displaying the wrench overlay, to indicate that it is
not yet configured. In either case, a “favorites” setup wizard may be
invoked to configure a “favorites” entry. Id. at col. 19, ll. 46–59. Once
enabled or set up, the button icons (Fig. 17a) provide direct access to
programming by causing the transmission of commands to tune a device to a
favorite channel. Id. at col. 19, ll. 26–30.

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C. The Claim
The challenged claim is reproduced below.
1. An electronically readable media having embedded
instructions executable by a processing device of a hand held
device for displaying information to a user of the hand held
device, the instructions performing steps comprising:
allowing a plurality of lists of favorite channels to be
defined for display in a display of the hand held device; and
accepting input into the hand held device that specifies to
the hand held device that the hand held device is to be placed
into a mode to control at least one of a plurality of home
appliances and, in response, using the input to select at least one
of the plurality of lists of favorite channels whereby the user
may interact with the at least one of the plurality of lists when
displayed in the display of the hand held device to cause the
hand held device to transmit one or more command codes to the
at least one of the plurality of home appliances associated with
the specified mode for the purpose of tuning the at least one of
the plurality of home appliances to a channel represented on the
at least one of the plurality of lists of favorite channels.

D. Asserted Prior Art
Realistic
Realistic, Owner’s Manual –
Universal Remote Control Cat.
No. 15–1903 (1989)
Exhibit 1003
Evans
US 4,825,200, Issued Apr. 25,
1989
Exhibit 1004
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E. Asserted Ground of Unpatentability
We instituted inter partes review on the ground that claim 1 is
unpatentable under 35 U.S.C. § 103(a) over Realistic and Evans.

II. ANALYSIS
A. Claim Interpretation
In an inter partes review, the Board construes claim terms in an
unexpired patent using their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).
The claim language should be read in light of the specification, as it would
be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must apply the
broadest reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
575, 577 (Fed. Cir. 2002)). There is a “‘heavy presumption’ that a claim
term carries its ordinary and customary meaning.” CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
The “ordinary and customary meaning” is that which the term would have to
a person of ordinary skill in the art in question. In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).

1. List
Claim 1 contains the noun form of the word “lists.” Because we do
not find the ’930 patent to set forth or contain any special definition for the
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term, we interpret “list” in accordance with its ordinary and customary
meaning. A “list” may be defined as an “item-by-item series of numbers or
words, as the names of persons or things, written or printed one after the
other,” such as a “shopping list” or a “guest list.” List Definition, AMERICAN
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, SECOND COLLEGE ED.
735 (1982).

2. Interact With
Claim 1 recites, “whereby the user may interact with the at least one
of the plurality of lists when displayed in the display of the hand held device
to cause the hand held device to transmit one or more command codes to the
at least one of the plurality of home appliances associated with the specified
mode for the purpose of tuning the at least one of the plurality of home
appliances to a channel represented on the at least one of the plurality of
lists of favorite channels” (emphases added). Patent Owner contends that
the “whereby” clause contains several interrelated elements that must be
considered together. PO Resp. 2–4. Further, Patent Owner contends that
“interact with” means “select a channel from.” Id. at 5–6.
A general dictionary defines “interact” as an intransitive verb meaning
“[t]o act on each other.” Interact Definition, AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE, SECOND COLLEGE ED. 669 (1982).
The claim recites that the user “may interact with the at least one of the
plurality of lists when displayed in the display.” Although the user may
“act” on the list,
2
the list does not, in turn, “act” on the user. The term

2
In the interest of brevity, in this Decision we will refer to the minimum
requirement of “at least one of the plurality of lists” — a list.
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“interact” in claim 1 is, thus, not used in its ordinary, general dictionary
sense. Rather, “interact with” appears to relate to user/device “interaction,”
such as an interactive computer terminal that receives input from a user and
provides output, which may include information (or “feedback”) to the user
in response to the input.
Petitioner submits that “interact with” is broader than “select a
channel from.” Pet. Reply 2–5. Petitioner contends that “interact with”
could be accomplished by, for example, scrolling or viewing information in
a display. Id. at 2–3. We agree to the extent that the phrase “interact with” a
list when displayed, in isolation, might be so interpreted. We also agree
with Petitioner (id. at 2–5) to the extent that Patent Owner fails to show that
the disclosure of the ’930 patent limits “interact with” to selection of a
channel from the list. In the language of claim 1, however, that the user may
“interact with” a list when displayed, to cause the device to transmit
command codes for the purpose of tuning to a channel, implies that
“interaction” with the list is selection of an item from the list, for effecting
transmission of the codes.
Patent Owner submits that when read as a whole, the “whereby”
clause of claim 1 requires, in order “to interact” with a displayed favorite
channel list to cause the remote to tune an appliance to a favorite channel
represented on the displayed favorite channel list, a user must select a
channel from the displayed favorite channel list. PO Resp. 10. According to
Patent Owner, “‘[r]epresented on’ in the context of Claim 1 must reflect the
concept that the selected channel be depicted on the display of the remote
control for the user to select.” Id. at 11.
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Petitioner responds that Patent Owner’s construction of “represented
on” would read out a “step-through” embodiment in the ’930 patent
specification that, presumably, does not require display of a channel. Pet.
Reply 6. The present inquiry, however, concerns the subject matter
embraced by claim 1, as opposed to what any particular embodiment
described in the patent may or may not require.
Further in response to Patent Owner’s construction, without citation to
any evidence in the record, Petitioner submits:
One cannot display a channel on a list. A list is an object that
can be displayed on a display, but nothing is displayed on a list.
A channel can be a member of a list, i.e., it can be “represented
on” a list, but it cannot be “displayed” on a list.

Pet. Reply 6–7. A channel, or a representation of a channel, can however be
displayed on a list. The displayed list of channels, represented as
programming network icons, as depicted in Figure 17a of the ’930 patent
(reproduced supra), contains representations of particular channels for
selecting an icon for tuning to the particular channel associated with that
icon. We agree with Petitioner to the extent that claim 1 does not require
that a channel be depicted on the display of the remote control for the user to
select. However, in view of the language of claim 1 that interaction with the
displayed list is “for the purpose of” tuning to a channel “represented on” the
list, the claim requires, at the least, that a representation of the channel for
tuning be displayed when the user interacts with the list to cause the hand
held device to transmit command codes for tuning the device to a particular
channel. We emphasize that our determination results from the claim
language requirements, not because any particular embodiment or any
particular written description in the ’930 patent requires such interpretation,
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and without any improper incorporation of details from its disclosure into
the claim.

B. Asserted Ground of Unpatentability
1. Realistic as Prior Art
Patent Owner contests the status of Realistic as prior art and, in
particular, its status as a printed publication under 35 U.S.C. § 102(b). PO
Resp. 32–35. Although in view of the record at the time of institution we
found there was a sufficient threshold showing that Realistic is § 102(b)
prior art (Dec. on Inst. 5–6), we do not reach the final determination whether
Realistic is proper prior art for this proceeding. For reasons expressed infra,
even if we presume that Realistic is a printed publication under § 102(b), the
evidence provided by Petitioner fails to establish, by a preponderance, the
unpatentability of claim 1.

2. Realistic
An excerpt from page 36 of Realistic (Ex. 1003, 19) is reproduced
below.
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The excerpt from page 36 illustrates how favorite channels are
specified. When the user presses the “LEARN” key, “SELECT” and “KEY”
appear in the display. In the second step, the user presses “FAVORITE,”
and the “FAV” (favorite) indicator appears. “CHN**” also appears in the
display.
A further excerpt from page 36 of Realistic (Ex. 1003, 19) is
reproduced below.

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The further excerpt illustrates the next steps for selecting favorite
channels. In the third step, the two-digit favorite channel is entered. For
example, if the user presses the keys “0” and “4,” “CHN 04” appears in the
display.
An excerpt from pages 38 and 39 of Realistic (Ex. 1003, 20) is
reproduced below.

The excerpt from pages 38 and 39 illustrates how one uses the
favorite-channel feature. When the user presses the “FAVORITE” key, the
“FAV” indicator appears. In the second step, when the user presses
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“CHANNEL” up or down keys, the remote control transmits the channels
from the favorite-channel list. One may select between devices (step 3) such
that the favorite-channel list becomes active for that selected device.

3. Obviousness over Realistic and Evans
Petitioner contends that claim 1 is unpatentable under 35 U.S.C.
§ 103(a) over Realistic and Evans. Petitioner maps the limitations of claim 1
to teachings in Realistic and Evans that are deemed to correspond to the
limitations. Pet. 21–28.
Although a channel number is not shown in Realistic in the illustrated
step 2 of using the favorite-channel feature (reproduced supra), when the
remote transmits the command code (channel number) to the device, one
would not necessarily draw the inference that the channel number is not
displayed when the command code is transmitted. Realistic does not show
in its graphic description everything that is displayed. Compare, for
example, step 2 of the favorite-channel selection, where the “FAV” indicator
is said to appear and is shown in the display with step 1 of using favorite-
channel, where the “FAV” indicator is said to appear but is not shown. See
also, e.g., Ex. 1003, 12 (Realistic at pages 22–23; characters in display not
shown in illustration for editing a command sequence). In fact, Patent
Owner’s expert, Mr. Cook, admitted that when using the favorite-channel
feature the selected channel number is displayed. Ex. 1052, 233:16–234:12,
237:11–238:4.
In any event, Petitioner submits that Evans teaches that the name of
the key or function in a remote control device is displayed when the
associated code is output to the receiving device. Pet. 27; Ex. 1004, col. 11,
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l. 57 – col. 12, l. 26. Petitioner submits further that because Realistic and
Evans are directed to remote controls from the same company, artisans at the
time would have understood that it was obvious to implement the Realistic
remote to use instructions executable by a processing device for displaying
information to the user as taught by Evans. Pet. 28; Ex. 1008 (Declaration
of James T. Geier) ¶¶ 34, 39. “Realistic teaches that the CHANNEL keys
cause the remote to send commands from the favorites list, and Evans
teaches to display the name of the key or function of the code to be
outputted.” Ex. 1008 ¶ 39.
Patent Owner argues that the combination of Realistic and Evans does
not teach or suggest all the limitations of the “whereby” clause of claim 1.
According to Patent Owner, “[c]laim 1 requires that a user interact with a
favorite channel list displayed on the remote to cause the remote to tune an
appliance to a channel depicted on the displayed favorite channel list.” PO
Resp. 18. We do not read the requirements of claim 1 so narrowly.
However, we have considered each of the parties’ positions with respect to
claim construction as developed during the trial and we are persuaded that
the claim requires, at the least, that a representation of the channel for tuning
be displayed when the user interacts with the list to cause the hand held
device to transmit command codes for tuning the device to a particular
channel. See § II.A.2, claim construction, supra. Petitioner does not
acknowledge that requirement, and, accordingly, does not show where
Realistic, Evans, or a combination thereof might teach or suggest such a
limitation. Moreover, Realistic and Evans teach, at best, that a channel or a
representation of a channel is displayed when the command codes for tuning
to the channel are sent by the remote control device, not a representation of a
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channel being displayed a priori to aid in selection of the channel by the
user; i.e., “for the purpose of” tuning to a channel represented on the list of
channels. See Pet. 26–27 (disclosure of Realistic and Evans that Petitioner
deems to correspond to “whereby” clause of claim 1).
The Petition must specify where each element of a challenged claim is
found in the prior art patents or printed publications. 37 C.F.R.
§ 42.104(b)(2). We are persuaded by Patent Owner that the Petition fails to
do so.

C. Conclusion — Realistic and Evans
Petitioner has failed to prove, by a preponderance of the evidence,
that claim 1 is unpatentable over the combination of Realistic and Evans.

D. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude Exhibit 1053 and Exhibit 1054, each
of which was submitted by Petitioner in its Reply in support of showing that
Realistic is prior art. Because we conclude that Petitioner has failed to meet
its burden in showing unpatentability, even if we presume that Realistic is
prior art, Patent Owner’s motion to exclude is dismissed.

E. Petitioner’s Motion to Exclude
Petitioner moves to exclude testimony of Patent Owner’s expert, Mr.
Cook, under redirect examination that is said to be inconsistent with
admissions under cross-examination, such as admissions that “interacting”
with a favorite channel list may include scrolling through channels on the
list and that in Realistic a channel from the favorite channel list is displayed
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on the display of the remote when the up or down channel button is pressed
a second time. Pet. Mot. to Exclude 2–3. Petitioner’s motion to exclude is
dismissed because Petitioner has not shown where Patent Owner relies on
the objected to testimony in any paper filed in this proceeding, and we find
none. Moreover, we have given full weight to Mr. Cook’s admission with
respect to channel display in Realistic (see § II.B.3, supra), and this final
written decision presumes that “interacting” with a favorite channel list may
include scrolling through channels on the list (see § II.A.2, supra).

F. Motions to Seal
Patent Owner and Petitioner each filed several papers (e.g., Paper 16)
and exhibits (e.g., Exhibit 1050) under seal, along with motions to seal
(Papers 18 and 24) and a protective order (Ex. 2045). The motions are
unopposed and are granted.
There is an expectation that information will be made public where
the information is identified in a final written decision, and that confidential
information that is subject to a protective order ordinarily would become
public 45 days after final judgment in a trial, unless a motion to expunge is
granted. 37 C.F.R. § 42.56; Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,761 (Aug. 14, 2012). In rendering this Final Written Decision, it
was not necessary to identify, nor discuss in detail, any confidential
information. A party who is dissatisfied with this Final Written Decision
may appeal the Decision pursuant to 35 U.S.C. § 141(c), and has 63 days
after the date of this Decision to file a notice of appeal. 37 C.F.R. § 90.3(a).
In view of the foregoing, the confidential documents filed in the
instant proceeding will remain under seal, at least until the time period for
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filing a notice of appeal has expired or, if an appeal is taken, the appeal
process has concluded. The record for the instant proceeding will be
preserved in its entirety, and the confidential documents will not be
expunged or made public, pending appeal. Notwithstanding 37 C.F.R.
§ 42.56 and the Office Patent Trial Practice Guide, neither a motion to
expunge confidential documents nor a motion to maintain these documents
under seal is necessary or authorized at this time. See 37 C.F.R. § 42.5(b).

III. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has not
demonstrated, by a preponderance of the evidence, that claim 1 of the ’930
patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the
combination of Realistic and Evans.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claim 1 of the ’930 patent has not been shown to be
unpatentable;
FURTHER ORDERED that the parties’ respective motions to seal are
granted;
FURTHER ORDERED that the parties’ respective motions to exclude
evidence are dismissed; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For Petitioner:
Douglas A. Miro
dmiro@ostrolenk.com

Peter Kang
pkang@sidley.com

Theodore Chandler
tchandler@sidley.com

Ferenc Pazmandi
fpazmandi@sidley.com

Keith Barkaus
kbarkaus@ostrolenk.com

For Patent Owner:

Eric Maiers
maierse@gtlaw.com

Michael Nicodema
nicodemam@gtlaw.com

James Lukas
lukasj@gtlaw.com

Robbie Harmer
harmer@gtlaw.com